https://leader.pubs.asha.org/article.aspx?articleid=2278967The Trouble With Trademarks: Product Namers BewareA trademark is a word, symbol, or device used to identify the goods or services of a specific entity and to distinguish them from those of others. In this sense, trademarks are “source identifiers” as compared to descriptive or generic terms. The term “aspirin,” for example, does not identify any ...2011-01-01T00:00:00Make It WorkMartin J. Rome

A trademark is a word, symbol, or device used to identify the goods or services of a specific entity and to distinguish them from those of others. In this sense, trademarks are “source identifiers” as compared to descriptive or generic terms. The term “aspirin,” for example, does not identify any particular source, but the word “Bayer” is easily recognized as a source identifier, and thus is a “trademark.”

Trademarks come in many forms. They can be words (“Apple”), symbols (Traveler’s “umbrella” logo), slogans (Allstate’s “You’re In Good Hands”), letter combinations (IBM), numbers (NASCAR driver Jeff Gordon #24), colors (Owens’ Corning pink home insulation), sounds (the three-note signature of the NBC television network), product design and packaging (the Coca-Cola bottle), and virtually anything else that is capable of serving as a source identifier.

Most audiologists and speech-language pathologists will not face significant trademark issues in the normal course of their careers, but for those seeking to develop and name new products or services, it is important to understand and consider trademark issues that may arise in that process.

A recent trademark issue involved Super Duper, Inc., a company that provides a variety of products used by SLPs, and the toy company Mattel. The case raised some concerns from members about the ability of SLPs and audiologists to use common words like “say” in their communications to patients and the general public.

The lawsuit involved Super Duper’s product named “See It! Say It!” (and six other named products) that were found by a jury to be too similar to Mattel’s “See ’n Say” mark. The case reinforced the notion that common words cannot be trademarked, because the court’s opinion in Super Duper v. Mattel had nothing to do with a person’s right to use the word “say” in and of itself, including in its ordinary day-to-day descriptive sense. In fact, although the court held that the mark “See It! Say It!” was confusingly similar to Mattel’s “See ’n Say” mark, the same court held that Super Duper’s “Fold and Say” mark was not confusingly similar, and could remain in use as a trademark.

A basic premise of trademark law is that conflicting trademarks must be compared by looking at them as a whole, rather than by breaking up the marks into their component parts for comparison. Unless you have a made-up word—like “Exxon” or “Kodak”—trademarks are often composed of common words, as in the following two well-known trademark slogans: “How do you spell relief?” (Rolaids) and “I’m Lovin’ It!” (McDonald’s). Because trademark law is concerned with protecting the mark as a whole, trademark law does not give Rolaids any exclusive (or other) rights to the word “relief,” nor does it give McDonald’s exclusivity over the term “love” or “lovin.’”

The takeaway from this case for audiologists and SLPs is clear: Anyone who wants to name a product or a service and communicate it to the public should consult with a trademark professional and have a trademark search conducted before using a new mark. The assessment of whether a mark is confusingly similar is best done by a trademark attorney; however, some marks may easily be ruled out by conducting a search of trade directories and the Internet, including the trademark database maintained by the U.S. Trademark Office.